In France, the transposition of the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 is still ongoing. The draft orders, published on February 15, plan numerous amendments to the French Intellectual Property Code. We will focus here on the refusal grounds of an application for registration of a trademark, extended by the project.
As the law currently stands, article L. 711-3 of the French Intellectual Property Code sets out three grounds for refusal of registration:
“The following may not be adopted as a mark or an element of a mark:
- a) Signs excluded by Article 6ter of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised, or by paragraph 2 of Article 23 of Annex 1C to the Agreement Establishing the World Trade Organization;
- b) Signs contrary to public policy or morality or whose use is prohibited by law;
- c) Signs liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services.”
Paragraph c) refers here to the arms, flags or emblems of a State of the European Union, as well as to signs containing a geographical indication identifying wines or spirits if the designated products do not actually have this origin.
The draft enactment transposing Directive (EU) 2015/2436 would modify article L.711-3, which is well established in French law. Thus, if the violation of public policy or accepted principles of morality, fraud as to the nature, quality or origin of the product or service, or use of State emblems, would remain grounds for refusal of registration of a trademark, the draft order amends Article L. 711-3 and adds other grounds for refusal.
Designations of origin and geographical indications
In accordance with Article L. 711-3 of the French Intellectual Property Code, an application for registration of a trademark may be refused if the sign is or contains a geographical indication falsely identifying the origin of wines or spirits.
This ground is retained in the draft enactment, but it is reformulated and extended. In that respect, the refusal of an application for registration could now be based on traditional terms for wines and traditional specialities guaranteed, knowing that these terms refer, among others, to the methods of production, elaboration, exploitation and ageing of the wine or to its quality.
Moreover, the previous existence of an appellation of origin or a geographical indication may in itself justify the refusal to register a trademark. Article L. 711-4 already allows to invoke an earlier appellation of origin or geographical indication to counter the registration of a new trademark in opposition proceedings. The new wording of article L. 711-3 of the French Intellectual Property Code therefore reinforces the protection granted to appellations of origin and geographical indications and thus demonstrates their economic importance.
Previously registered plant variety denominations
French law protects plant varieties by issuing a plant variety certificate (Article L. 623-4 of the French Intellectual Property Code). However, the Intellectual Property Code did not make any explicit link between this certificate and the registration of a trademark. Protecting a trademark which reproduces the characteristics of a new plant was therefore possible.
From now on, the existence of an earlier registered plant variety constitutes grounds for refusal of the registration of a new trademark which would reproduces its main characteristics or its denomination (Article L. 711-3 modified). Consequently, just as in the case of appellations of origin and geographical indications, the registration of the trademark will be blocked from the beginning of the procedure.
Applicant’s bad faith
The “Trademark Reform Package” allows States to refuse to register a trademark because of applicant’s bad faith. The French Government used this opportunity in his draft orders and introduced this ground for refusal in article L. 711-3.
The text is clear on this point but leaves unanswered the question of the interpretation of the notion of “bad faith”. Therefore, the definition of this concept is left to the discretion of INPI representatives. The scope of this notion of bad faith will progressively be clarified by future decisions. The French Cour de Cassation has already ruled on the meaning of this concept in cancellation proceedings. .It appears that bad faith is a subjective element, which is assessed at the time of the filing, and is determined by all the facts. The applicant will have to intend to prevent the use of an earlier trademark, without regard to the interests of its holder. In other words, it is necessary to characterize an intention to harm. (Cass Com., 3 February 2015 n°13-18025)
In order to characterize this bad faith on the day of the application for registration, it can therefore be assumed that the intention of the applicant to act fraudulently and his knowledge of an existing prior right will also play a role. However, it is not possible to limit bad faith to cases where the applicant seeks to take ownership of the trademark of others. Bad faith might also refer to situations where the applicant seeks to prevent the filing of other trademarks. The refusal to register the mark thus also helps to fight parasitism and unfair competition.
Moreover, it should not be forgotten that, in France, the refusal of registration is made by a representative of the INPI. The latter will interpret bad faith on a case-by-case basis and in complete independence.
In other words, the grounds for refusal introduced by the draft orders implementing the “Trademark Reform Package” are not negligible. They extend the leeway granted to the INPI from the very beginning of the registration procedure. These changes focus on the development of geographical indications, designations of origin and plant varieties in order to take into account economic situations.
To be continued…